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Genentech, Inc. v. Hospira, Inc.

No “Missing Limitation” Where POSITA Would Have Reasonably Understood Limitation to be Practiced

Genentech, Inc. v. Hospira, Inc., __ F.3d __, 2020 WL 111268 (Fed. Cir. Jan. 10, 2020) (Prost, Newman (dissenting), CHEN) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR decision holding Genentech’s claims obvious. Genentech’s patent relates to methods of purifying certain proteins via protein A affinity chromatography. Analyzing the record, the opinion finds no reversible error in the Board’s determination that a prior art process was within the claimed temperature range. Although some temperature details were not expressly laid out, the evidence supported the Board’s determination that a POSITA would have reasonably understood the temperature limitation to be practiced. Thus this was a not a “missing limitation” case requiring a finding that a POSITA would “at once envisage” the missing limitation, as in Nidec, 851 F.3d 1270 (Fed. Cir. 2017). As to separate claims, the evidence supported the Board’s obviousness determination, including its determination that Genentech had failed to overcome the presumption that prior art disclosure of an overlapping range of values renders the claimed range obvious. Per Celgene, 931 F.3d 1342 (Fed. Cir. 2019), the application of IPR to Genentech’s patent (which had issues prior to the AIA) was not unconstitutional.

Dissent: Judge Newman would have reversed. She accuses the majority of applying improper hindsight to find Genentech’s patent invalid over references that did not fully address Genentech’s claimed invention.

KEYWORDS: INTER PARTES REVIEW; RANGE OF VALUES